Australian trade mark opposition procedure changes

Amendments to the Trade Mark Regulations 1995 came into force in Australia on 15 April 2013. These amendments significantly affect the trade mark opposition procedure in Australia.

For applications published after 15 April 2013, the opposition period has been reduced from three months to two months. Potential opponents must now file a simple Notice of Intention to Oppose (NIO) by the opposition deadline. Prior to the changes it was possible to extend the opposition period where negotiations between the two parties were underway or where the opponent was researching whether or not to lodge an opposition. The opposition period can now only be extended where:

  1. there has been an error or omission by the opponent, its agent, the Registrar or an employee; or
  2. there are circumstances beyond the control of the opponent, other than an error or omission falling within point one above.

Within one month of filing the NIO, the opponent must file a Statement of Grounds and Particulars (SGP). This deadline can only be extended on the same limited grounds above. It is therefore important that the opponent conduct thorough enquiries early on in the proceedings to ensure it can mount as strong a case as possible.

After the SGP is filed, the Registrar assesses its adequacy and may request further information or dismiss the inadequate grounds or the opposition in its entirety.

Within one month of the NIO, the applicant must file a Notice of Defence (NID) stating its intention to defend the opposition. Whilst this is not particularly onerous on the applicant, it may present a problem for those seeking protection in Australia via an international trade mark registration. Any delay at the World Intellectual Property Office, who receive the reroute the NIO and SGP to the applicant, could result in the deadline for defending the opposition being missed. Consequently, those applicants seeking protection in Australia via the international route should consider recording an address for service in Australia to ensure this does not occur.

As for the evidence rounds, the deadline for filing evidence in reply has been reduced from three months to two months. The deadlines for filing evidence can only be extended if the Registrar is satisfied that the requesting party:

  1. has made all reasonable efforts to comply with all relevant filing requirements; and
  2. despite acting promptly and diligently at all times to ensure the filing of the evidence within the period is unable to do so; or
  3. there are exceptional circumstances that justify the extension.

It is also no longer possible to file further evidence after the Evidence in Support, Answer and Reply stages have been completed. It is therefore important to act promptly at all times during the proceedings and ensure all evidence is filed at the correct stage.

When the NIO and SGP have been submitted, the two parties to the proceedings have the option of jointly entering into a cooling off period. The initial period is six months but this can be extended by a further six months.

In view of these new changes, anyone seeking trade mark protection in Australia and who faces an opposition should ensure they do not delay in meeting deadlines and preparing and submitting evidence. Where protection in Australia is sought via the international trade mark system, it is worth considering appointing a local attorney to record themselves as the address for service to ensure no delays in meeting deadlines that could result in a loss of rights.

If you wish to seek trade mark protection in Australia or need advice regarding the Australian opposition procedure, please speak to your usual advisor at Wilson Gunn or click here to contact us.

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